DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This office action is in response to the claim amendments filed on December 29, 2025.
Claims 1-20 are pending.
Claims 1-20 have been examined.
Response to Arguments
With respect to Claim Rejections - 35 USC § 101
Applicant argues: independent claims 1 and 11 of the present application recite none of those enumerated activities, and are in fact essentially unrelated to interactions between people whether those interactions are economic, legal, or behavioral. Applicant respectfully asserts that independent claims 1 and 11 are not merely directed to assigning and redeeming credit. Rather the present application discloses and claims a unique digital identifier-based asset redemption system and method in which a particular user's unique digital identifier-based assets can be redeemed, whether those assets were awarded by the entity providing the unique digital identifier-based assets, or by another independent entity. See Applicant’s arguments pages 6-10.
The Examiner, however, respectfully disagrees. As a preliminary matter, the Examiner follows the 2019 Patent Eligibility Guidance (“2019 PEG”) which is a synthesis of the case law of Alice and its progeny. Additionally, the reasoning for this rejection is the same as was laid out in the Office Action Non-Final Rejection, dated 10/01/2025 (hereinafter, “Office Action”). Furthermore, while Applicant has amended (i.e., underlined text) the claim to recite additional subject matter, for example, the amended claim limitations recite: receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier being wrapped with metadata locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user, further describe the abstract idea of asset redemption. Furthermore, receive ownership data identifying a unique digital identifier conferring ownership; confirm, using the unique digital identifier, the ownership of the asset by the user; verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset; and enable,…the user to redeem the asset…, either automatically or in response to an authentication performed by the user, can be performed by using a pen and paper and/or that can be performed mentally. The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. Additionally, a hardware processor and a system memory does not necessarily restrict the claim from reciting an abstract idea.
Applicant argues: independent claims 1 and 11 of the present application recite none of those enumerated activities, and Applicant respectfully asserts that the subject matter recited by currently amended independent claims 1 and 11 is in fact essentially unrelated to interactions between people whether those interactions are economic, legal, or behavioral. Applicant respectfully asserts that independent claims 1 and 11 are not merely directed to assigning and redeeming credit. Rather the present application discloses, and currently amended independent claims 1 and 11 recite, a specific technical solution to a technical problem. The technical problem confronted in this case is enablement of automated asset redemption across a distributed heterogeneous network.
Applicant respectfully asserts that, at least by the same token, currently amended independent claim 1 does not recite a judicial exception, because currently amended independent claim 1 does not claim or recite a mathematical algorithm, certain methods of organizing human activity, or a mental process. On the contrary, currently amended independent claim 1 recites an approach to using a particular user's unique digital identifier to enable the user to redeem assets awarded by one entity, from another entity identifiable as a redemption partner of the awarding entity based on metadata wrapping the unique digital identifier, without requiring reference to a remote blockchain or other secure transaction ledger, thereby advantageously reducing the latency and computational overhead imposed by conventional solutions for redeeming assets across distributed heterogeneous systems. Thus, for the reasons presented above, Applicant respectfully submits that currently amended independent claim 1 is directed to patent eligible subject matter, under Step 2A, prong (1). See Applicant’s arguments pages 7-10.
The Examiner, however, respectfully disagrees. The claims recite, receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier being wrapped with metadata locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; confirm, using the unique digital identifier, the ownership of the asset by the user; verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset, that a second entity is an authorized asset redemption partner of the first entity; and enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user.” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106.04(a)) because the claims clearly discloses, commercial interaction, for example, receiving ownership data, verify the ownership data and enable redeem an asset to a user of the ownership data.
Accordingly, the claims recite an abstract idea (See MPEP 2106.04). (Step 2A-Prong 1: YES).
Applicant further argues: Turning to prong (2) of Step 2A, Applicant respectfully submits that even if, arguendo, currently amended independent claim 1 is drawn to a judicial exception (which Applicant does not concede to be so), any such judicial exception is integrated into a practical application. Applicant respectfully submits that currently amended independent claim 1 recites meaningful limits beyond a commercial concept, satisfying MPEP § 2106.05(e). Currently amended independent claim 1 does not preempt asset redemption generally. Instead the redemption solution recited by currently amended independent claim 1 is limited to unique digital identifiers with wrapped smart contract metadata and automated system-controlled transfers between distinct digital wallets.
Applicant notes that the present application explicitly defines "automation" as not requiring the participation of a human user, and currently amended independent claim 1 recites automated verification, automated entitlement enforcement and automated wallet-to-wallet transfers. This automation changes how computing systems operate, rather than merely speeding up a human transaction.
Thus, for these additional reasons, Applicant respectfully submits that currently amended independent claim 1 is directed to patent eligible subject matter, under Step 2A, prong (2) See Applicant’s arguments pages 11-12.
The Examiner however, respectfully disagrees, the claims (e.g., the amended claims) also fail to recite a practical application of the abstract ideas. According to the 2019 PEG, the additional claim elements are considered when determining whether the claim recites a practical application, such as a technological improvement, of the abstract idea. However, the claims fail to introduce any such additional elements. Again, “receive ownership data identifying a unique digital identifier conferring ownership, …, the unique digital identifier being wrapped with metadata describing terms of a smart contract governing redemption of the asset; confirm, using the unique digital identifier, the ownership of the asset by the user; verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset, …; and enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity …, either automatically or in response to an authentication performed by the user” are not considered as additional claim elements. More specifically, the amended claim limitation, locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; and the transfer being executed by the system in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user. Therefore, the claims do not, for example, purport to improve the functioning of a computer and the claims are directed to an abstract idea. Thus, claims do not integrate the abstract idea into a practical application. Therefore, this analysis is the same as was laid out in the Office Action. (Step 2A-Prong 2: NO).
Applicant further argues: For the sake of completeness, applying the second step of the analysis, Applicant respectfully submits that the elements of independent claim 1, when considered both individually and as an ordered combination, amount to significantly more than a judicial exception. For example, currently amended independent claim 1 includes meaningful limitations, such as: a hardware processor; and a system memory storing a software code: the hardware processor configured to execute the software code to:…Accordingly, Applicant respectfully submits that currently amended independent claim 1 is directed to patentable subject matter, and should be allowed. As noted above, currently amended independent claim 11 includes limitations analogous to those recited by currently amended independent claim 1 and are consequently also directed to patentable subject matter for reasons similar to those discussed above, and should also be allowed. As such, claims 2-10 depending from and further limiting currently amended independent claim 1, and claims 12-20 depending from and further limiting currently amended independent claim 11, are also directed to patentable subject matter, and should also be allowed for at least the reasons presented above, and also for the additional limitations recited by each dependent claim. Accordingly, Applicant respectfully requests withdrawal of the present rejection of claims 1-20, under 35 U.S.C. § 101. See Applicant’s arguments pages 12-14.
The Examiner however, respectfully disagrees. The claims also fail to recite significantly more than the abstract idea. According to the 2019 PEG, the additional elements, when considered individually and as a combination, are analyzed to determine whether the claims recite significantly more than the abstract idea. However, the claims (e.g., the amended claims, underlined text) fail to recite any new additional elements. As noted in the Office Action, the additional elements serve to implement the abstract idea in a computing environment.
Furthermore, the amended claim, receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier being wrapped with metadata locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user, it does not appear that the amended claim would result in any improvement to the recited technology. Therefore, the claims limitations do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the claim is not patent eligible. (Step 2B: NO).
Accordingly, this ground of rejection is maintained.
With respect to Claim Rejections - 35 USC § 103
Applicant' s arguments with respect to claim 1-20 have been considered but are moot in view of new grounds of rejection initiated by applicant' s amendment to the claims. Additionally, the reasoning for this rejection is the same as was laid out in the Office Action (under “Response to Arguments” heading).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-10 are directed to a system comprising a hardware processor and a system memory, and claims 11-20 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recite an abstract idea of asset redemption. Specifically, the claims recite “receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier being wrapped with metadata locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; confirm, using the unique digital identifier, the ownership of the asset by the user; verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset, that a second entity is an authorized asset redemption partner of the first entity; and enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the … in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user”, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106.04(a)) because it describes a process for carrying out a commercial interaction between parties that involves communicating data needed to complete a transaction to the parties. Accordingly, the claims recite an abstract idea (See MPEP 2106.04). (Step 2A-Prong 1: YES).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(a or d)), the additional element(s) of the claim(s) such as a hardware processor and a system memory merely use(s) a computer as a tool to perform an abstract idea. Specifically, the hardware processor and system memory perform(s) the steps or functions of “receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier being wrapped with metadata locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; confirm, using the unique digital identifier, the ownership of the asset by the user; verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset, that a second entity is an authorized asset redemption partner of the first entity; and enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user.” The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (See MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (See MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (See MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea. (Step 2A-Prong 2: NO).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of using a hardware processor and a system memory to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of asset redemption. As discussed above, taking the claim elements separately, the hardware processor and system memory perform(s) the steps or functions of “receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier being wrapped with metadata locally storing terms of a smart contract governing redemption of the asset, such that redemption data is retrievable without querying a remote transaction database; confirm, using the unique digital identifier, the ownership of the asset by the user; verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset, that a second entity is an authorized asset redemption partner of the first entity; and enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the locally stored terms of the smart contract either automatically or in response to an authentication performed by the user.” These functions correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of asset redemption. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Therefore, the claim is not patent eligible. (Step 2B: NO).
Regarding dependent claims
Claims 2 and 12 recite: wherein the unique digital identifier comprises a non- fungible token (NFT).
Claims 3 and 13 recite: wherein confirming the ownership of the asset by the user comprises referencing a blockchain.
Claims 4 and 14 recite: wherein confirming the ownership of the asset by the user comprises referencing the metadata accompanying the unique digital identifier.
Claims 5 and 15 recite: wherein the ownership data is received from the first entity or from a user device of the user.
Claims 6 and 16 recite: wherein the first digital wallet and the second digital wallet are stored on a user device of the user.
Claims 7 and 17 recite: wherein the asset comprises a digital asset.
Claims 8 and 18 recite: wherein the asset comprises an entitlement to one of an augmented reality experience, a virtual reality experience, or a mixed reality experience.
Claims 9 and 19 recite: wherein the first entity and the second entity are owned in common by a parent business entity.
Claims 10 and 20 recite: wherein the first entity and the second entity are independent business entities.
Dependent claims further describe the abstract idea of asset redemption. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites, “such that redemption data is retrievable without querying a remote transaction database”, thus, claim 1 contain negative limitations.
The Examiner notes that negative limitations tend to define the invention in terms of what it was not, rather than pointing out the invention. In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953).
Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”).
However, As noted in MPEP 2100, “Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement.” Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). See MPEP § 2163 - § 2163.07(b) for a discussion of the written description requirement of 35 U.S.C. 112, first paragraph.
Claim Rejections - 35 USC § 103
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 7-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Eby et al. (US 20230104103 A1, “Eby”) in view of YANTIS et al. (US 20210326856 A1, “YANTIS”) further in view of Nikolay Manchovski (US 20210097795 A1, “Manchovski”).
Regarding claims 1 and 11: Eby discloses: A system comprising:
a hardware processor; and a system memory storing a software code;
the hardware processor configured to execute the software code to (see Fig. 1 and related text):
receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity (Eby [0061]: at block 506, the exchange 111 can send a request to the custody service 143 to validate the NFT 123. The validation request can include the NFT identifier 129 of the NFT to be validated. The validation request can also include the owner identifier 139 of the purported owner of the NFT 123 in some implementations; [0050]: the custody service 143 can receive a request to transfer ownership of an NFT 123…As another example, the current owner of the NFT 123 could send the request (e.g., due to the current owner gifting the NFT 123 to another or in response to the current owner completing a private sale of the NFT 123)) the unique digital identifier [including] with metadata describing [transfer information / terms] (see paragraphs [0061] and [0050] and Fig. 5);
confirm, using the unique digital identifier, the ownership of the asset by the user (Eby [0062]: Next, at block 509, the custody service 143 can send a proof request to the identity wallet 169 in response to receiving the validation request at block 506. The proof request can specify the verifiable credential 159 to be authenticated or verified, so that the identity wallet 169 can return the proof for the desired verifiable credential 159. For example, the proof request could specify the NFT 123 associated with the verifiable credential 159 (e.g., by including the NFT identifier 129 of the NFT 123)), (see paragraph [0065] and Fig. 5);
verify, [by reference to the unique digital identifier], that a second entity is an authorized asset redemption partner of the first entity (Eby [0064]: Proceeding to block 516, the custody service 143 can use the proof received from the identity wallet 169 to verify the verifiable credential 159. For example, the custody service 143 could use the NFT owner public key 133 maintained by the custody service 143 to verify the cryptographic signature of the verifiable credential 159 or the cryptographic signature of the token stored with the verifiable credential 159. If the cryptographic signature generated by the custody service 143 matches the cryptograph signature provided by the identity wallet 169 in response to the proof request, then the custody service 143 can determine that the owner of the verifiable credential 159 is the owner of the NFT 123), (see paragraph [0064] and Fig. 5); and
enable, in response to confirming and verifying, the user to [sell or the current owner gifting the NFT 123 to another] the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the locally stored [transfer information / terms] either automatically or in response to an authentication performed by the user (Eby [0065]: at block 519, the custody service 143 can send a message to the exchange 111 confirming ownership of the NFT 123. This message could include an indication that the owner identifier 139 identifies the true owner of record for the NFT 123 and that the verifiable credential 159 confirming ownership is valid; [0066]: Subsequently, at block 513, the exchange 111 can publish the NFT 123 on the exchange for sale. The publication or listing of the NFT 123 can be done in response to the custody service 143 confirming the ownership of the NFT 123), (see paragraphs [0022], [0065]-[0066] and [0050] and Fig. 5).
As indicated above, Eby discloses, transferring ownership of the asset and allowing the new owner to sell or gift it (see paragraphs [0022], [0065]-[0066] and [0050] and Fig. 5). Thus, Eby discloses, enable, the user to redeem the awarded asset.
However, for compact prosecution and clarity purpose, the Examiner cites YANTIS to specifically disclose, enable, the user to redeem the awarded asset (see paragraphs [0848], [0973] and [0974]).
As indicated above, Eby discloses, receive ownership data identifying a unique digital identifier conferring ownership, to a user, of an asset awarded to the user by a first entity, the unique digital identifier [including] with metadata describing [transfer information / terms] (see paragraphs [0061] and [0050] and Fig. 5).
Examiner’s Note: with respect to claim language “the unique digital identifier being wrapped with metadata describing terms of a smart contract governing redemption of the asset” this is nonfunctional descriptive material as it only describes data values, while the data values are not used to perform any of the recited method steps. Therefore, it has been held the nonfunctional descriptive material will not distinguish the invention from the prior art in term of patentability. See MPEP 2111.05 and MPEP 2106.01.
Eby does not specifically, disclose, the unique digital identifier being wrapped with metadata describing terms of a smart contract governing redemption of the asset.
However, YANTIS discloses: the unique digital identifier (i.e., token or token identifier) being wrapped with metadata (e.g., the virtual representation of the item) describing terms of a smart contract governing redemption of the asset (YANTIS [0883]: In embodiments, the token is a wrapper that wraps an instance of a virtual representation. In some of these embodiments, the token generation system 302 may generate a token identifier that identifies the token. In scenarios where the tokens are non-fungible tokens, the token generation system 302 may generate a unique identifier for each respective token corresponding to the virtual representation…For each token, the token generation system 302 may generate a token wrapper that includes the token identifier and the virtual representation of the item; [0842]: In embodiments, each virtual representation of an item may include or be associated with a smart contract that, for example, provides a set of verifiable conditions that must be satisfied in order to self-execute a transaction (e.g., transfer of ownership or expiration) relating to an item represented by the virtual representation. In embodiments, each token corresponding to a virtual representation may be associated with the smart contract that corresponds to the virtual representation. In embodiments, a smart contract corresponding to a virtual representation may define the conditions that must be verified to generate new tokens, conditions that must be verified in order to transfer ownership of tokens, conditions that must be verified to redeem a token, and/or conditions that must be met to destroy a token; [0845]: [0845] In addition to item data (e.g., virtual representations); [0892]: The token verification request may include a token to be verified or a token identifier thereof), (see paragraphs [0883], [0842], [0845], [0892], [0837] and [0685]).
Examiner’s Note: the Examiner considers the token or token identifier of YANTIS to be the unique digital identifier and “the virtual representation of the item” of YANTIS to be the metadata.
Furthermore, Examiner considers, [0842]: “In embodiments, each virtual representation of an item may include or be associated with a smart contract that, for example, provides a set of verifiable conditions that must be satisfied in order to self-execute a transaction (e.g., transfer of ownership or expiration) relating to an item represented by the virtual representation” of YANTIS to be the metadata describing terms of a smart contract governing redemption of the asset.
As indicated above, Eby discloses, verify, [by reference to the unique digital identifier], that a second entity is an authorized asset redemption partner of the first entity (see paragraph [0064] and Fig. 5).
Eby does not specifically, disclose, verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset.
However, YANTIS discloses:
verify, by reference to the metadata wrapping the unique digital identifier and describing the terms of the smart contract governing redemption of the asset (YANTIS [0892]: In embodiments, the verification system 306 receives a token verification request. The token verification request may include a token to be verified or a token identifier thereof; [0837]: The virtual representation of the item may include information that identifies the item (e.g., a serial number corresponding to the item, a model number of the item, and the like), information relating to the item (e.g., a classification of the item, textual descriptions, images, audio, video, virtual reality data, augmented reality data, and the like), and/or code that may be used to facilitate or verify transactions involving the item (e.g., smart contracts). In some embodiments, the platform may “tokenize” an item on behalf of a seller of the item by generating a set of tokens based on the virtual representation of the item and storing the tokens and associated metadata in a cryptographically secure distributed ledger, thereby making the tokens (and the virtual representation) verifiable, transferable, and trackable; [0842]: In embodiments, each virtual representation of an item may include or be associated with a smart contract that, for example, provides a set of verifiable conditions that must be satisfied in order to self-execute a transaction (e.g., transfer of ownership or expiration) relating to an item represented by the virtual representation… In embodiments, a smart contract corresponding to a virtual representation may define the conditions that must be verified to generate new tokens, conditions that must be verified in order to transfer ownership of tokens, conditions that must be verified to redeem a token, and/or conditions that must be met to destroy a token), (see paragraphs [0892], [0837] and [0842]).
Alternatively, YANTIS further discloses:
enable, in response to confirming and verifying, the user to redeem the asset awarded by the first entity from the second entity via an automated system-controlled transfer of the unique digital identifier from a first digital wallet linked to the first entity to a second digital wallet linked to the second entity, the transfer being executed by the system in accordance with the [cryptographically storing on distributed ledger] terms of the smart contract either automatically or in response to an authentication performed by the user (YANTIS [0973]: At 1204, a redemption request is received. The redemption request seeks to redeem a digital token from a user device of a user, and the digital token corresponds to an instance of the item to be redeemed. At 1206, ownership of the digital token by the user is verified. The verification can be made based on the plurality of public addresses, the sets of digital tokens, and the redemption request), (see paragraphs [0837], [0842] [0848], [0969], [0971], [0973] and [0974]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Eby with YANTIS to include well-known functions of redeeming token/coupons to enhance user experience.
As indicated above, Eby in view of YANTIS discloses, the unique digital identifier being wrapped with metadata [cryptographically storing on distributed ledger] terms of a smart contract governing redemption of the asset, such that redemption data is retrievable […] querying [the distributed ledger] (see paragraph [0837] and [0842]).
Eby in view of YANTIS does not specifically, disclose, metadata locally storing terms of a smart contract.
However, Manchovski discloses: metadata locally storing terms of a smart contract and the transfer being executed by the system in accordance with the locally stored terms of the smart contract (Manchovski [0179]: In each of the aforementioned scenarios, the sensitive information is preferably stored on the owner device….The digital key, token or smart contract may also be generated by the owner device and is stored locally on the owner device and, preferably, only less sensitive meta information about the key, token or smart contract is centrally stored. Preferably the stored meta information contains enough information to identify which device is allowed to use the lock under which circumstances; [0049]: that the owner device and the user device are each part of the Blockchain network in the sense that they each locally synchronize with changes made to the Blockchain network. This has the advantage of additional security as each device can locally generate transactions which are to be stored on the Blockchain network), (see paragraphs [0120], [0179] and [0049], ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Eby and YANTIS with Manchovski to include functions of digital authentication, store validation data locally and to validate data (e.g., key information, token or smart contract) locally on the user device to enhance user experience and data security.
Regarding claims 2 and 12: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein the unique digital identifier comprises a non- fungible token (NFT), (see paragraphs [0061] and [0050] and Fig. 5).
Regarding claims 3 and 13: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein confirming the ownership of the asset by the user comprises referencing a blockchain (see paragraphs [0047]-[0048]).
Regarding claims 4 and 14: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein confirming the ownership of the asset by the user comprises referencing the metadata accompanying the unique digital identifier (see paragraph [0041], [0048] and [0051]-[0052]).
Regarding claims 5 and 15: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein the ownership data is received from the first entity or from a user device of the user (see paragraphs [0050]).
Regarding claims 7 and 17: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein the asset comprises a digital asset (see abstract and paragraph [0017]).
Regarding claims 8 and 18: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein the asset comprises an entitlement to one of an augmented reality experience, a virtual reality experience, or a mixed reality experience (see paragraphs [0837] and [0881]).
Examiner’s Note: with respect to the claim language, “an augmented reality experience, a virtual reality experience, or a mixed reality experience” this is nonfunctional descriptive material as it only describes data values, while the data values are not used to perform any of the recited method steps. Therefore, it has been held the nonfunctional descriptive material will not distinguish the invention from the prior art in term of patentability. See MPEP 2111.05 and MPEP 2106.01.
Regarding claims 9 and 19: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby does not specifically, however, YANTIS discloses: The system of claim 1, wherein the first entity and the second entity are owned in common by a parent business entity (see paragraphs [0012] and Fig. 1).
Alternatively, SecondaryReference discloses: wherein the first entity and the second entity are owned in common by a parent business entity (see paragraph [0894] and Fig. 4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Eby with YANTIS to include well-known functions of redeeming token/coupons to enhance user experience.
Regarding claims 10 and 20: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
Eby further discloses: The system of claim 1, wherein the first entity and the second entity are independent business entities (see paragraphs [0009] and [0022] and Fig. 1).
Claims 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Eby et al. (US 20230104103 A1, “Eby”) in view of YANTIS et al. (US 20210326856 A1, “YANTIS”) in view of Nikolay Manchovski (US 20210097795 A1, “Manchovski”) further in view of Dao et al. (US 20200151689 A1, “Dao”).
Regarding claims 6 and 16: Eby, YANTIS and Manchovski, discloses the limitations of claim 1 above.
As indicated above, Eby discloses, digital wallet stored on the user device.
Eby doesn’t explicitly discloses, however, Dao discloses: The system of claim 1, wherein the first digital wallet and the second digital wallet are stored on a user device of the user (see [0032] and Fig. 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination Eby and YANTIS with Dao to include functions of storing plurality of digital wallets on a user device to enhance user experience.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/JAHED ALI/Examiner, Art Unit 3699
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